The substantial assessment of the distinctive character of signs in the context of an infringement action
CLINIQUE / WBT decisions: Paris Tribunal de Grande Instance of 16 December 2016; Paris Court of Appeal of 20 June 2017, Court of Cassation of 27 March 2019 and Paris Court of Appeal of 6 November 2020.
C. is the owner of a European Union trade mark CLINIQUE registered for various goods and services in classes 3, 14, 25 and 42 and in particular "toiletries and body care products, soaps, perfumery, essential oils, cosmetics, beauty advice services in respect of the selection and use of cosmetics, toiletries".
The company W. registered in 2015 two French trademarks CLINIQUE DIGITALE in classes 3, 5 and 42 and LA CLINIQUE DIGITALE in classes 3, 35 and 42. Oppositions were filed against them, both of which were rejected by the INPI in view of the differences between the signs in question. In a second step, the Court of Appeal rejected the application for the trademark CLINIQUE DIGITALE considering that there was an effect of declination between the first mark CLINIQUE but maintained the trade mark LA CLINIQUE DIGITALE given the major differences between the signs.
In 2016, C. notes that W. uses the signs on a website and indicates that he is preparing to launch an application for smartphone "LA CLINIQUE DIGITALE" which will allow to "build a beauty profile and benefit from promotions on cosmetic products".
Despite mixed decisions in the context of the oppositions, C. chose the voice of the rapid proceedings (référé) to have the infringement of its trademark's reputation established on the basis of the uses detected. The judge recognized the reputation of the trade mark CLINIQUE for cosmetic products but considered that the mere common use of the term CLINIQUE was not sufficient for the public to establish a link between the signs. In this respect, he considers that the addition of the term DIGITALE to the term CLINIQUE confers on the sign, in addition to the visual differences, a different final sound and that conceptually the expressions CLINIQUE DIGITALE and LA CLINIQUE DIGITALE have a proper and different meaning from the one borne by the term CLINIQUE alone.
On the comparison of products and services, it is noted that there is only an indirect link between the products and services in question. Finally, on the question of the public, it is only "partially identical" because in the case of LA CLINIQUE DIGITALE the public is composed of consumers of cosmetic products, but also of consumers "driven by a desire to share" and who "wish to access care advice through a community of users" who are not professional advisors or linked to major brands in the sector.
Consequently, the infringement of the earlier mark CLINIQUE is not upheld. Following an appeal by C., the Court of Appeal confirmed the previous in all its provisions. In March 2019, C. filed an appel before the Supreme Court only on the issue of the assessment of similarity between the goods and services and the Court of Appeal's decision was overturned.
The Court of Cassation considers that the Court of Appeal did not sufficiently investigate whether the services or products offered through the use of new technologies by the company W., and the products of C. did not have a complementary nature that could lead the public to attribute a common commercial origin to them. Indeed, the Court of Appeal and the judge in chambers had merely considered that there was an "indirect link" without qualifying the nature of this link.
Following this decision of the Court of Cassation, the case was therefore brought again before the Court of Appeal, which handed down its decision on last 6 November.
With regard to the comparison of products and services, the Court of Appeal considers this time that there is a link of complementarity insofar as "the beauty consulting services designated under the signs LA CLINIQUE DIGITALE or CLINIQUE DIGITALE aim ultimately, and essentially, to guide the user in the choices he will have to make in his purchases of cosmetic products, it follows that the public concerned is identical.
Regarding the signs, this time it is considered that the earlier mark CLINIQUE has a strong distinctive character and that its reproduction creates a high degree of similarity which is not altered by the addition of the word DIGITALE. The term DIGITALE is seen here as a purely descriptive term for the use of digital means in view of the use made in practice, and therefore does not confer a proper meaning to the expression CLINIQUE DIGITALE or LA CLINIQUE DIGITALE in relation to the earlier mark CLINIQUE.
⇒ The court thus considers that the consumer will establish, even if they do not necessarily confuse them, a link between the trade mark CLINIQUE and the signs LA CLINIQUE DIGITALE and CLINIQUE DIGITALE, which may lead him to attribute to the goods and services in question a common origin or to associate them as originating from economically linked undertakings. The infringement of the earlier mark with a reputation CLINIQUE is therefore upheld.
It should be noted that the fact that the debate focuses on the use of the contested signs rather than on the trade marks themselves makes it possible not to confine the debate to the wording of the trade marks as claimed, but rather to a concrete assessment of the goods and services as exploited and therefore has an impact on the assessment of the distinctive character of the elements which make up the signs in question.